Continued Applicability of pre-AIA 35 U.S.C. 102
and 103: The Leahy-Smith America Invents Act (AIA) revised
35 U.S.C.
102 and thereby, the standard to determine what prior art is
available during examination of an application. See Pub. L. 112-29, 125 Stat. 284 (2011).
The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any
application filed before March 16, 2013. Thus, any application filed before March 16, 2013,
is governed by pre-AIA 35
U.S.C. 102 and 103 (i.e., the application is a pre-AIA
(first to invent) application (hereinafter “pre-AIA application”)). Note that neither the
filing of a request for continued examination, nor entry into the national stage under
35 U.S.C.
371, constitutes the filing of a new application. Accordingly, even
if a request for continued examination under 37 CFR 1.114 is filed on or after March
16, 2013, in an application that was filed before March 16, 2013, the application remains
subject to pre-AIA 35
U.S.C. 102 and 103. Submission of an amendment
including a claim that includes new matter on or after March 16, 2013, also does not affect
an application’s status as a pre-AIA application. See 35 U.S.C. 132(a). Similarly, a PCT
application filed under 35 U.S.C. 363 before March 16, 2013, is
subject to pre-AIA 35
U.S.C. 102 and 103, regardless of whether the
application enters the national stage under 35 U.S.C. 371 before or after March 16,
2013. Applications filed on or after March 16, 2013 are also subject to pre-AIA 35 U.S.C. 102
if the application has never contained a claim with an effective filing date on or after
March 16, 2013 and has never claimed the benefit of an application that ever contained such
a claim. MPEP §§
2131-2138 provide examination guidance on the
prior art available in the examination of applications subject to pre-AIA 35 U.S.C.
102.